Understanding Trademarks

Nikhil Nair

In this highly competitive and proliferating world, it has become useful and more secure to protect the work or the goods or services or the methods and methodologies by the proprietor. These methods of securing and protecting once own products and services are known as trademark and service mark respectively.

A Trademark popularly known as a brand name  is an identification symbol which may be a word, a device, a label or numeral etc. or a combination thereof used in the course of trade to enable the purchasing public to distinguish one trader’s goods from similar goods or other traders.

The legal requirements for a trademark

  • It should be able to distinguish goods and services from that of others.
  • It should be able to represent itself graphically.
  • It should be a used or proposed to use mark and should expressly indicate the proprietor of the trademark and who all is able to use it.

Purposes for trademark

  • It advertises the goods/services.
  • It creates an image of the goods/services.
  • It identifies the goods/services and its origin.
  • It guarantees the quality of the goods/services.

When a trademark is registered, it is indicated as registered by using the symbol ®.

A Service Mark is any sign, symbol, mark, wording, or specific indication, or a combination of any two or more of these, which makes the services of a company(engaged in any service field) uniquely distinct from the services of other service proving companies or organizations, in the concerned jurisdictional marketplace. Again, a service mark not only distinguishes services of a service-proving company, but also implies some specific good qualities of the services, and generous vision and goodwill of the related company. These marks are statutorily protected and can be registered under the Trademarks Act,1999. This act came to effect from 2003. Clauses 35 to 45 properly classify the services. Some of these include Insurance services, Catering and Hospitality services, Advertising services, Telecom services, Financial services, Medical services etc.

The Trademarks distinguish goods and products belonging to various fields, while the Service Marks make the services of the service-providing companies and organizations which are active in diverse fields of the service sector.

The most important task of filing for the trademark or a service mark is the registration of it under the proper zonal trademark office of India. These offices are located in New Delhi, Mumbai, Chennai, Ahmadabad and Kolkata.

The major process of registering for the trademarks or service marks is :

  • Creation of the trademark or service mark.
  • Searching for uniqueness within India.
  • Preparing and filing application for registration.
  • Official examination and Verification.
  • Removing any drawbacks and rectifying the trademarks or the service marks.
  • Solving any cases of opposition.
  • Making prompt and expert prosecution regarding registration.

Based on the location of the service providing company of the applicant, the zonal office is selected and the application for registration is made in any of the 5 regional offices. These regional offices will perform their registration process according to the guidelines. The application form for seeking registration is TM-1. Along with this, all the important and significant documents are to be attached and submitted.

The process for the registration of a trademark or a service mark is as follows :

1. Searching the trademark records

Before registering a trademark or a service mark, it has to analyzed and found out if anyone else is using the same trademark or the service mark that has been applied for in India. It has to be thoroughly checked to find out if the applied trademark or service mark is in use or not. The government will check and issue a certificate if the applied mark is registered already. The applicant has to pay a governmental fee of 500 RS. or so to get the records checked.

2. Registration fees

The registration fee is to be provided for each and every classification of the product or service that has to be registered. The government time and again mentions its fees to the applicant for the registration of trademark or service mark. The present rate for the application of a mark is RS 3500 only and for the searching of the all India records, it is RS 500.

3. Inclusion of a specimen

A specimen of the trademark or the service mark should be given to them i.e. an example of how the trademark is being used or is proposed to be used should be submitted. An advertisement or a label using the logo the applicant wants to trademark.

On the completion of the well prepared application, the regional office will analyze the contents of the application and the filed mark and verify all documents. If any fault is found then the office will inform the applicant for the faults to be removed. If no fault is found and everything is seen to be in place, then the application is published in the Indian Trade Marks Journal for a period of 3 months for the purpose of knowing the opinions of the owners of previously registered trademarks and service marks in India. If no opinion is received within these 3 months then the mark is approved by the government. If any opinion is received by any company then all the legal issues have to be properly solved through explanatory discussions in the presence of the applicant, the opposing member and the judicial body of the opposite side before giving the final permission.After filing of the application, the concerned regional office grants the certificate of the issuance of the trademark or the service mark within a year. In cases regarding disputes,more time would be taken.

Time Span of registration

Every trademark or service mark has a time span of 10 year counted from the date of registration and it has to be renewed within this tenure of ten years every time.The application for making a punctual renewal is form TM-12 which has to be a submitted along with a fee of RS 5000.

The trademark or the service mark can also be also applied online through the government website www.ipindia.nic.in . If the applicant determines that no one else is using his trademark then he can file the application online using the Trademark Electronic Application System (TEAS).

To file a trademark or a service mark, one does not need to appoint an agent for it. The applicant can act for himself and file for the registration of the mark.

Nikhil Nair
Vivekananda Institute of Professional Studies,
GGSIP University, New Delhi